Appeal No. 2001-1375
Application 09/204,609
examiner concedes that Turunen teaches a single step rather than
a two-step process for adjusting sodium hydroxide concentration,
he maintains that the invention “amounts to no more than a
breaking up of the prior art base addition step into a base
addition step followed by a marginal dilution step.” Id., pages
3-4. According to the examiner, it would have been obvious to
one of ordinary skill in the art to have modified Turunen’s
process by marginally diluting the solution to correct the base
concentration as this is “a skill very well known in the chemical
arts.” Id., page 4.
Proper analysis under section 103 requires, inter alia, a
consideration of two factors: (1) whether the prior art would
have suggested to those of ordinary skill in the art that they
should make the claimed composition or device or carry out the
claimed process; and (2) whether the claimed prior art would have
revealed a reasonable expectation of success in doing so. See In
re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed.
Cir. 1988). In order to prevent the impermissible use of
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